Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Wednesday, 24 May 2017

Readers with an interest
for copyright in unusual or, rather, less conventional 'objects' [I will explain below why the word 'works' might not be appropriate] will know that for quite some time it has been disputed
whether IP protection - particularly in the form of copyright - is available
to, say, perfumes or culinary creations.

So far proponents of
sensory copyright have not been really met with widespread approval [for the sake of a debate organised in London a while ago by IPKat
founder Jeremy Phillips and BLACA, I supported the motion that there is
indeed such thing as sensory copyright - my slides are available here; Jeremy's report can be read here].

Not long time ago, contrary
to some lower instances' decisions, the French Supreme Court dismissed for instance the idea that
copyright could subsist in a perfume [here; here for a Dutch take on the matter], and in 2015 a Dutch court (Gelderland
District Court) refused to acknowledge that copyright
would subsist in the taste of a cheese, Heks'nkaas[see here and here].

Speaking
of cheese, the Dutch saga of Heks'nkaas is - thankfully - not over.

The case
is in fact making its way to the Court of Justice of the European Union (CJEU)
for guidance on whether EU law allows copyright protection in taste (in this
case, the taste of a cheese).

Despite
its subject-matter this new reference is anything but cheesy.

The
content of the CJEU reference

As
explained by Amsterdam-based Syb
Terpstra (De
Brauw Blackstone Westbroek N.V), counsel to one of the parties in the Heks'nkaas case, yesterday the Arnhem-Leeuwarden Court of Appeal issued
an interim decision, in which it held that
guidance from the CJEU is needed to determine:

If
so, what requirements must be met in order to determine subsistence of
copyright protection?

The actual questions are
available (in Dutch) here[thanks to @TreatyNotifier for providing the link].

Mac'n'cheese

Why this reference is
important

This new case promises to
be a very interesting and important one, if the CJEU deems it admissible.

The reason is essentially
that the CJEU will need to clarify at last what is meant by 'work', thus
revisiting and elaborating further on its earlier case law, notably Infopaq and its progeny [particularly BSAandFAPL].

In that string of cases the
CJEU held that under EU law copyright protection should arise any time a work
is 'its author’s own intellectual creation', ie a work is sufficiently
original. In FAPL, for instance, the CJEU had to determine whether
football matches as such can be eligible for copyright protection. The court
denied that that would be the case of football matches because they "cannot be classified as works. To be so
classified, the subject-matter concerned would have to be original in the sense
that it is its author’s own intellectual creation."[paras 96 and 97]

There is no legislative
definition of 'work'. I argued elsewhere that CJEU case law appears to
suggest that the notions of 'originality' and 'work' conflate, in the sense
that the assessment of originality entails that of whether a certain 'object'
is to be regarded as a 'work'. Possibly the reason for this is that in the Infopaq line
of cases (and even in BSA), the focus of the questions referred to
the CJEU was more on what originality means, rather than what a work
is. In this sense, the Heks'nkaas case will be to some extent different [at least as long as the CJEU does stick to the
text of the questions as referred, instead of re-writing them]. The focus will be primarily on defining the
notion of 'work' and then perhaps re-visit the topic of originality.

The Berne Convention adopts
an open-ended definition of 'literary and artistic works'. Article 2(1) does
not define the term ‘works’, although it clarifies that such expression “shall
include every production in the literary, scientific and artistic domain,
whatever may be the mode or form of its expression”.

According to the current WIPO Guide, although the general tone of the Convention suggests that “it is not
possible to speak about a complete definition” (BC-2.2.), “the context in which
the words “work” and “author” are used in the Convention – closely related to
each other – indicates that only those productions qualify as works which are
intellectual creations (and, consequently, only those persons qualify as
authors whose intellectual creative activity brings such works into existence).”
(BC-2.3.). Does the taste of a cheese fall within such definition of
'work'?

In general terms, it may be said that “[t]he term ‘production’
… only indicates that the protected object must have emerged from the mind of a
person, left the sphere of the mind and become realized. This coincides with
the term ‘expression’ also contained in the definition.” [§5.66]

Does the taste of a cheese
fall within such definition of 'work'?

'Say cheese'

Why this reference could
have been is important for the UK

An additional profile of
relevance of this new CJEU case is that there is the potential for the CJEU to
hold - particularly, but not necessarily only, if it acknowledges the
possibility of sensory copyright - that EU law envisages an open-ended subject-matter categorisation.

While this is already the
case of continental copyright traditions (relevant statutes do not limit the
types of works in which copyright can subsist), the same is not true for the
UK and Ireland.

With particular regard to the former, the Copyright, Designs and
Patents Act 1988, in fact, envisages a closed list of eligible
copyright subject-matter [see also my guidance for students here]. As UK-based readers know, this has proved challenging
for less conventional works, in the sense that not always a suitable category
can be identified. This has resulted in denying copyright protection in, say,
the assembly of a scene (Creation Records) or the Stormtrooper
helmet (Lucasfilm).

In a piece published on GRURInt I argued that
EU law - or, rather, CJEU case law - mandates the opening up of UK
subject-matter list. Although 1709 Blog readers did not agree with this proposition, in
his judgment in SAS v WPL, Arnold J [at para 27] heldthat: "In
the light of a number of recent judgments of the CJEU, it may be arguable that
it is not a fatal objection to a claim that copyright subsists in a particular
work that the work is not one of the kinds of work listed in section 1(1)(a) of
the Copyright, Designs and Patents 1988 and defined elsewhere in that
Act." At the same paragraph, however, referring to Infopaq the
learned judge added that: "it remains clear that the
putative copyright work must be a literary or artistic work within the meaning
of Article 2(1) of the Berne Convention ... While the definition of
"literary and artistic works" in Article 2(1) is expansive and
open-ended, it is not unlimited."

With hard Brexit [ie a situation in which the UK will be no longer bound by EU law
and CJEU judgments] on the horizon, some might think that the Heks'nkaas case will have
a more limited relevance for the UK. However:

According
to latest CJEU statistics[the average duration of CJEU proceedings in the context of
references for a preliminary ruling is 14.7 months: see p. 28], when the Heks'nkaas case is decided the UK will be still part of the
EU;

As
clarified by UK Government in its White Paper accompanying the Great Repeal Bill,
this bill "will
provide that historic CJEU case law be given the same binding, or
precedent, status in [UK] courts as decisions of [UK] Supreme
Court" [p. 14].

In conclusion

The Heks'nkaas case is one to watch. Not only will it determine to
what extent copyright protection can be stretched [let's not forget that since Sieckmann, trade mark protection has not
been really available to sensory 'signs', and things will not really change in
my view with the disappearance of the graphic representation requirement], but also what system of copyright categories EU
law or, rather, the CJEU envisages.

Interesting post / question. Chris Buccafusco has written some provocative articles arguing that taste ought to be protected by copyright. See e.g. Making Sense of Intellectual Property, 97 Cornell L. Rev. (2012) at http://scholarship.law.cornell.edu/cgi/viewcontent.cgi?article=3231&context=clr

The German Supreme Court is of the opinion that cooking recipies are generally elgible for patent protection (BGH Suppenrezept) if they satisfy the usual conditions. I think that handling taste protection via patent law would be a better approach than via copyright, especially as in a patent it must be explained how a specific taste is actually achieved (in the form of a recipie) which makes it possible for a third party to determine whether it infringes IP or not. Taste copyrights would destroy any legal certainty.

RE: Not long time ago, contrary to some lower instances' decisions, the French Supreme Court dismissed for instance the idea that copyright could subsist in a perfume.

RE: The Heks'nkaas case is one to watch. Not only will it determine to what extent copyright protection can be stretched [let's not forget that since Sieckmann, trade mark protection has not been really available to sensory 'signs', and things will not really change in my view with the disappearance of the graphic representation requirement], but also what system of copyright categories EU law or, rather, the CJEU envisages.

It is a very old state of the art in my view.

The technologies develop fast in perfume recognition, for example. Read Dr Danny Friedmann in the JIPLP: EU opens door for sound marks: will scent marks follow? Journal of Intellectual Property Law and Practice.

It wasn’t that long ago that I heard he adage: “Not all that COULD be copyrightable SHOULD be copyrightable.” The point is that intellectual property (in particular the monopoly-type rights such as patents, designs and copyright) serves its purpose best if the public and private interests are balanced, and if protection is available only where required to maintain the incentive for creative/innovative activity. Is it the case that the absence of IP protection for scents or tastes as such is blocking or preempting the arrival of new perfumes or cheeses? We must not forget that competition -- which includes the possibility of copying other persons’ products and business ideas -- is one of the fundamental forces behind innovation and general welfare.

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!